IPSC: TM III/Music

Trademark III

Graeme B. Dinwoodie, Chicago–Kent College of Law – Illinois Institute of Technology, Not Just the Gutting of Rogers: A Window into Modern Trademark Challenges

Defenses developed much more seriously in the US than in Europe. Rogers was an exemplar of the way to develop defenses. Ensure speedy resolution of nuisance claims by weak confusion claims against Ds with strong speech interests. But then Gordon v. Drape made defense seem wobbly. This wasn’t a surprise given the Empire case—seemed much closer to the core of TMs/harder to treat as a Rogers/quick-kill case. But the whole point of having a rule is efficiency/certainty even w/ an occasional error. But common law means that courts are going to want to tweak the rule to deal with the situations they encounter. Ideally open questions can become more certain over time. Would rather have certainty develop through accretion of case law.

Must we accept the current reality of textualism and expect judges to read the Lanham Act like the tax code? Grynberg argued as far back as 2009 that TM wouldn’t be immune from the disease of textualism, especially w/r/t defenses, and he’s been proven right—courts think the Lanham Act is “comprehensive” which is laughably false. Gorsuch’s concurrence in JDI is textualism on steroids—the idea that the statute demands the application of Polaroid or Sleekcraft is bananas. How do we deal with this?

Go back to the TM Cases: essential character of the TM system as common law and merely supplementary nature of statutory law. Push common-law delegation statute characterization; there’s a robust literature on this outside of TM. Gorsuch hints at constitutional avoidance creating room for innovation.

TM needs to take on board the fact that it is a normative project as a component of the solution. But the best openings in JDI—Sotomayor’s survey skepticism, etc.—are framed by the Justices in empirical terms even though they could easily lend themselves to normative analysis. Myopic focus on consumer perception continues to infest the courts, despite that it’s incomplete and 1-dimensional. Need to broaden the lens of what TM is doing.

Rules v. standards debate—has always been a standards person b/c of the range of fact patterns. Pressure to create rules exist, but nebulousness of TM concepts make rules harder to generate, as w/TM use.

Should TM be understood as consumer protection or industrial property rights allocating rights among producers? Latter, more European, looks more formalistic in definition and scope of rights. That would provide more certainty. 9^th Circuit just said in Ryder Ripps that Rogers didn’t depend on intent.

McKenna: normative/empirical divide: Is formalism a middle lane between the two? Formalism lets you say what “use as a mark” is using formal characteristics about what things generally are uses and which aren’t, and use normativity to justify doing that analysis at a higher level of generality rather than case by case.

Discussion of Kagan’s empirical claim (parodies are unlikely to cause confusion) as having a normative component.

Linford: Consider US v. Alvarez and its implications dilution: one takeaway is that if Congress hasn’t buttoned down the harm story, that strengthens the case for unconstitutionality. Constitutional review: scrutiny is how good a job Congress did, and that’s sort of an empirical question.

A: it’s also normative, even if you’re asking about a means/ends nexus. But making courts articulate justifications has some disciplinary benefit.

Cynthia Ho, Loyola University, Chicago School of Law, Registered but Replaced

Gemini Data registered since 2021; Google files application for Gemini in 2023; refused but still kept using the term. Lawsuit resulted. But there are over 1000 Gemini registrations and over 50 just for software. When Gemini tried to get its own registrations, it got an Office Action about other uses, and so it had to admit that it was a weak, diluted mark.

Many Metas existed before Meta; one just sold its name. Meta has said the mark was diluted when trying to deal with preexisting Metas but also is willing to bring confusion cases against new Metas. Pump, a small band, lost a claim against Aerosmith’s Pump album. Dreamwerks v. Dreamworks studio; it got swamped even after the 9^th Circuit allowed its claim to proceed. A bigger company may swamp you even w/a reverse confusion claim.

So does registration really work? Presumption of validity doesn’t help if you can’t afford to litigate.

Dinwoodie: these are reverse confusion cases—small companies should get injunctions if they succeed, so what is it that allows big companies to proceed?

A: sometimes the small company loses; Dreamwerks they just paid money.

Dinwoodie: Maybe the paper is about what the harms of reverse confusion really are.

Lemley: Also articulate what the remedies should be. Money gets paid b/c injunctions are a terrible idea from a consumer protection perspective—making Meta abandon its new name causes confusion in the real world. [Weren’t we just talking about normativity and disregarding actual confusion?]

Amazon Women’s Bookstore in 1995 started having an Amazon problem. UTube (Universal Tube & Roll Co.) got a bunch of unwanted traffic. Those are harms, but maybe the remedy is “small company should change its name and get a bunch of money.” Bound up with registry crowding—there are a lot of things that shouldn’t be registered. And it’s not so easy to find a name that’s not registered by someone.

Rosenblatt: how do we deal with the fact that reverse confusion happens? Is it ok that Amazon took over the name of a bookstore? Do we think that small companies that sue should get payment or that they’re just gold-diggers? Strong enforcement might be worse for small companies under many circumstances.

Alex Roberts: look at bargaining under the shadow of the law—there are lots of things that are never attempted b/c of registrations. This as a kind of bullying invites comparison with the bullying literature.

Thomas Haley, University of Florida Levin College of Law, Copyright Disincentives

Blurred Lines case created concerns about chilling effects. Arguably broadened what was protectable subject matter for a musical work. If creating music risks getting you sued, maybe the incentive to create music will be decreased. A musician might see headlines, but how will that translate into creation decisions? Perceived likelihood of suit; cost of litigation; cost of damages; and norms all contribute to potential disincentive.

If no one hears your song, no one will ID infringement, so there’s mostly no reason to worry. Litigation cost is high, and statutory/actual damages can be too (actual can be much higher for a popular song), so those would be disincentives. Potential plaintiffs don’t have much incentive to sue unless the damages would be high.

Only the top of the market has much to worry about. Only 7 of well over 100 cases aren’t against one of the big 3 labels. Ds usually have songs that chart high or at least artists who have charted in the hot 100 (over 90%).

Spoke to several musicians about their understanding—basically everyone knew about Blurred Lines, thought it was wrong, and didn’t think it mattered to them at all.  

Q: are there differences b/t artists with their first big hit or trying to have their first big hit and those that are already established? Are you looking at artists who are trying to become commercially successful or those who aren’t playing the pop game?

A: the latter.

Joseph Fishman, Vanderbilt Law School, Revenue Streams Without Streaming Revenue

Book based on qualitative interviews w/35 Nashville songwriters. Chapter about how they make their money.  Punchline: they all describe earning majority of their revenue from FM radio, not streaming, even though streaming is a much bigger source of revenue for music publishers. Why?

Every rate paid is regulated one way or another. For radio play, the only right that is needed is public performance (PRO) money; streaming requires both public performance and reproduction, and Copyright Royalty Board combines that into an all-in rate that’s about 15% currently. Streaming is 45% of industry revenue and radio only 8%, so why do artists report things differently?

Why? Hypotheses:

PROs are reporting things weirdly. Nearly half of what they characterize as radio payments are bonuses for hit songs. Where do they get that money? Nearly half comes from general licensing revenue for venues. Nearly half of that money comes from physical performances/physical locations where music is played.

Maybe country is different—more radio listening, less digital streaming. Skeptical it can explain the magnitude, and pop writers say the same thing.

Recoupment hides $ from streaming but not from radio. Mechanical part of royalties is paid from publisher, which deducts advances. But some writers didn’t receive advances/were never recouped and report the same thing.

Smaller pie but bigger pieces for radio? It may be b/c of streaming’s long tail, revenue is being cut into so many smaller pieces that a big hit doesn’t represent much of a share.

Q: role of different PROs, some of which aren’t under antitrust decree, in contributing to opacity?

Buccafusco: is there any way to determine whether the types of songs earn different percentages of their income on radio v. streaming?

Q: what was the pie like prior to streaming?

A: lots of radio and a lot of revenue from physical media.

Q: was it less out of whack?

A: yes. As long as you made it onto the album you got a cut.